Director, Chemical Patent Counsel

BioMarin is the world leader in delivering therapeutics that provide meaningful advances to patients who live with serious and life-threatening rare genetic diseases. We target diseases that lack effective therapies and affect relatively small numbers of patients, many of whom are children. These conditions are often inherited, difficult to diagnose, progressively debilitating and have few, if any, treatment options. BioMarin will continue to focus on advancing therapies that are the first or best of their kind.

By providing a foundation for all operations company wide, BioMarin’s General and Administrative teams support our mission of providing first and best in class therapeutics to patients who live with rare diseases. Our teams include groups such as finance, legal, human resources, corporate compliance and ethics, and information technology. Come join our team and make a meaningful impact on patients’ lives.

Job Purpose: This position will focus on IP portfolios of small molecule therapeutics but may also support biologic programs. The responsibilities of this position include: (1) implementation of Intellectual Property (IP) strategies to develop IP portfolios for small molecule products, product candidates and early stage programs; (2) assistance with the development and maintenance of an IP infrastructure; and (3) provision of IP-related support to other functional groups within BioMarin.

• IP Strategy: Develop and maintain a detailed understanding of assigned projects, including business value, corporate objectives, and relevant timelines. Conduct patentability and freedom-to-operate analyses and evaluate IP risks. Review potential invention disclosures and evaluate for patentability, trade secret and / or publication. Build and maintain IP portfolio, including foreign and domestic patents, trademarks, trade secrets, and copyrights. Develop and implement strategies to enforce patents.
• IP infrastructure: Work with IP group to develop and implement IP department policies and procedures, including cost-effective, time efficient workflows. Provide oversight of outside counsel.
• IP Support: Establish cross-functional networks to provide IP-related support to research, manufacturing, program management, legal corporate, business development and other departments within Company. Counsel research and corporate clients regarding patent portfolio and strategy. Review proposed publications. Provide diligence and contract support for in-licensing and acquisitions. Participate in IP-educational efforts including team presentations to other functional groups. Provide IP representation at functional group meetings.

 

Experience and Skills:

BioMarin is seeking applicants with strong experience in drafting, prosecuting and strategically managing small molecule patent portfolios, with additional experience in biologics a plus. The applicant must have excellent written and verbal communication skills, and should be capable of giving well-organized, thoughtful presentations. The applicant must exhibit critical thinking, an attention to detail, and be able to independently identify issues potentially impacting the business. An ability to sustain good working relationships with the IP group and other functional groups is critical. Interpersonal skills, such as maintaining a pleasant demeanor, seeking and considering constructive input, and sound decision-making abilities are highly valued.

 

Requirements:

• Six or more years of experience in practice of prosecution, maintenance and enforcement of small molecule IP portfolios, with at least two years with a patent law firm
• Advanced degree in chemical or pharmaceutical arts (PhD preferred); experience with in biochemical or biopharmaceutical arts is a plus
• Juris Doctor
• USPTO registration
• State bar membership that is in good standing; if not a member of the California bar, the candidate is willing to obtain admission as a registered in house counsel.

PLEASE NOTE: Absent a Medical or Religious reason that prohibits vaccinations, all our incoming employees must be vaccinated for COVID-19.

We are an equal opportunity employer and all qualified applicants will receive consideration for employment without regard to race, color, religion, gender, gender identity, sexual orientation, national origin, disability status, protected veteran status, or any other characteristic protected by law.